Graffiti artist Banksy has been making headlines recently in regard to his legal battles to maintain the trademark status of his artwork. In one well-known case, the trademark for his piece known as “The Flower Thrower” has been invalidated because he failed to utilize the mark properly, meaning that others can now use said art in the course of trade.
Even if your mark is registered, if you do not use your trademark properly, it is possible that you may lose your rights to it.
Used properly, trademarks can be thought of as the pulse of your corporate image and represent the heartbeat at the center of your brand. A strong, healthy, and well-protected trademark will invoke goodwill, drive culture and set you apart from you competitors in the eyes of clients and fans. But, in order to benefit from the protection and enforceability of trademarks, it is important that you use your trademark as a trademark.
What does that mean exactly? As Banksy recently discovered, the answer is not always so clear cut.
Banksy, the anonymous graffiti artist whose famous works of art pop up overnight in public spaces, has recently become embroiled in trademark disputes which have led to some of his trademarks being invalidated by the European Union Intellectual Property Office. The reasoning provided was that Banksy never had the intention of using his graffiti art for selling goods and services. His artwork was merely art, not intended for merchandise.
There is a lot we can learn about trademark use from Banksy’s ordeal…
To keep his anonymity, Banksy has registered several trademarks for his artwork under the name Pest Control, including one for a mural known as “Flower Thrower” which was painted in Bethlehem. In 2019, Banksy had his IP rights questioned by a British greeting card company (who were incorporating the art into some of their designs), saying the mark had been filed in bad faith and asking that it be cancelled.
Instead, to combat the claims of non-use, Banksy opened his own store, through which to sell merchandise is an attempt to abide by the law which requires trademark owners to use their brands in the course of trade.
Unfortunately for Banksy, the EU trademark office ruled that “in opening a shop specifically to sell merchandise showing the Flower Thrower, Banksy had admitted that the use made of the brand was not genuine, and instead in bad faith, aimed at creating or keeping a share of the market by selling products simply to circumvent the law.”
To obtain and maintain trademark protection you need to ultimately USE the trademark. But what does trademark use mean? Basically, it means that you should be selling goods and/or services under the trademark and prominently use your trademark in connection with those goods and services.
For use on goods, you should be selling your goods while displaying the mark on the goods itself, their packaging/labels or in any other manner so that the mark is associated with the goods at the moment of sale.
For use on services, you should display the mark while performing the services, in advertisements or prominently on the website in close proximity to the description of the services.
Using a name solely as a company name while your products and/or services are sold under a different name is NOT use as a trademark.
Below are other examples of what is not considered as trademark use:
Also, merely displaying your trademark on your website does not necessarily mean worldwide use of your trademark. Use in Canada means that the transfer of the commercial chain needs to occur in Canada through regular sales of goods in Canada or by performing or advertising services in Canada (with a sufficient nexus with Canada e.g. physical presence maybe an office, actively targeting Canadian audience)
Use is important because trademark ownership is ultimately established by use. In Canada you do not have to provide information on use in your trademark application. Yet, first use of a trademark has priority over a first filed trademark application. Your competitors can still oppose your trademark application and prove that they had prior use so that registration will become refused. They can also challenge your trademark in court and invalidate it based on prior use.
Also, if you have a trademark registration, your registration will be vulnerable to cancellation if the mark has not been used (or, as Banksy determined, used incorrectly) for a period of 3 years after registration. A third party could start an expungement procedure for your trademark to cancel it.
Your registered mark is susceptible to be expunged based on abandonment if it is no longer in use. For example, if your competitor sees that you are using a different name for your product, they can argue that you abandoned your mark and expunge your trademark registration based on abandonment.
Because trademarks are allowed to be used and publicized prior to formal registration, it is important to be mindful of practices that may invalidate your mark. As Banksy found out, the rights to an allowed trademark can be fought. As the visual representation of your organization and to avoid costly rebranding, it is important to avoid these mistakes:
1 | Bad faith. As the Banksy case demonstrates, trademarks (as the name suggests) must be used in the course of trade and registration without intent to do so, is one made in bad faith.
2 | Non-use. We recommend continuous use of the trademark. Let your trademark stand out in all of your text on website or advertisements, documents, packaging, etc.
3 | Making deviations in your mark or logo. Trademark protection is only conveyed on what is registered. Any deviation (such as font) means your competitors could claim that you are not using or have abandoned your trademark, and you could lose your trademark registration.
4 | Using your trademark as a noun or verb. If you allow other people to use it as a noun or verb, it can become generic. For example, the trademark for “spinning” is being petitioned to invalidate because it became generic after people began to refer to it as a sport as opposed to an indoor cycling program offered by a specific athletic business.
5 | Adopting existing trademarks used by competitors. Regardless of whether or not they have filed a trademark application, if your mark is similar to what is being used by someone else, you are putting yourself at risk of invalidation as first use is prioritized over first filing when it comes to trademarks.
6 | Improper Licensing. Improper vetting of licensing partners could lead you to lose your trademark if they misuse it.
7 | Generic or descriptive words. Trademarks must be distinct and cannot be descriptive of the product or service in such a way that would bar others from entering the market. An example of this would be the trademark dispute between Iceland, the country and Iceland Food, the supermarket. With their trademark, the supermarket was effectively blocking the country from using “Iceland” in tourism campaigns and to market local wares.
8 | Adopting a trademark which is the name of the goods/services in another language. Foreign words and phrases are not registrable as a trademark and attempting to do so will most likely result in your application being denied.
9 | Not paying attention to international rules and borders. Canadian trademarks must have a significant nexus with Canada. You may also be forced to change your trademark if you are expanding into a market that already has a registered trademark that is the same or confusingly similar with yours.
10 | Not paying attention to renewal dates. In Canada, trademarks must be renewed every 10 years in order to remain valid.
Since Banksy never used or intended to use his graffiti artwork as a trademark, copyright is the better intellectual property protection. Banksy is using his artwork as artwork. However, a copyright suit would require Pest Control to show that it has acquired the copyright from the artist. This would likely reveal Banksy’s real name, which the artist wants to avoid, as it would remove his aura of mystery and affect the commercial value of his art.
Banksy has famously stated that, “Copyright is for losers”, but, in his case, it may have been the best form of IP protection.
As the case with Banksy illustrates, not only is trademark monitoring and searching important but so is ensuring that you are utilizing the best form of IP protection for your ideas. If you have questions about trademark usage and want to know if you are using your trademark properly, we’re here to help.
About Kim: A registered trademark agent in Canada, Kim is an IP Specialist with a unique combination of skills, education, and assets with a drive for success and a passion for Intellectual Property. Working with growing organizations for many years she’s honed her ability to be both creative and strategic with IP solutions and strategy implementation plans.
She specializes in IP analytics and Trademark Strategy and Prosecution. Before becoming an IP specialist at Stratford, she practiced law in Belgium for 5 years. Kim holds an LLB and LLM in law from Belgium and followed trademark studies at McGill University.